A Silhouette of Fortress Europe? International Exhaustion of Trade Mark Rights in the EU
| Author | Tuomas Mylly |
| Published date | 01 March 2000 |
| Date | 01 March 2000 |
| DOI | http://doi.org/10.1177/1023263X0000700104 |
| Subject Matter | Article |
Tuomas Mylly*
A Silhouette
of
Fortress Europe? International Exhaustion
of
Trade Mark Rights in the ED
§ 1. Introduction
The issue of parallel imports is becoming increasingly contentious. Barriers to
international trade have generally become surmountable following the
GAIT
Uruguay
Round which resulted in the reduction and abolition of tariffs and other protectionist
measures. As a consequence, the conditions for parallel (or grey) markets have
flourished. Consumption of and trade in goods incorporating one or more intellectual
property rights have expanded rapidly. Information and intellectual property rights as
such have become major objects of trade. And yet, the question of exhaustion of
intellectual property rights has not been adequately tackled at an international level. The
efforts to liberate world trade have not been successfully extended to products
incorporating intellectual property rights.
The purpose of this article is to try to shed some light on one comer of grey markets
and to critically address the position of the international exhaustion doctrine in the area
of European Union (EU) trade mark law after the Silhouette ruling. IIn that case the
Court ruled out the possibility of ED member states applying the doctrine of
international exhaustion of trade mark rights. The trade mark laws of ED member states
exhaustion was an open question until the Silhouette ruling. It will be suggested that
*
1.
2.
Researcher, University of Turku (Finland). E-mail: tuomyl@utu.fi. 1 wish to thank Professor Niklas
Bruun of the Swedish School of Economics (Helsinki) and Gerald Ndika of Kyushu University for
useful comments and suggestions on a draft and Dr. Mark Fenwick
of
Kyushu University for his kind
help with language and style. However, 1am responsible for the views presented and for any possible
errors in this essay.
Case
C-355196
Silhouette International SchmiedGmbH&Co. KG v. Hartlauer Handelsgesellschaft
mbH [1998] ECR 1-676.
First Council Directive 89/104/EEC
of
21 December 1988 to approximate the laws
of
the member
states relating to trade marks, [1989] O.J. UO/1.
7 MJ 1 (2000) 51
International Exhaustion of Trade Mark Rights in the EU
despite the existence of legitimate trade mark interests in some instances, the ED market
should be opened up to more parallel import, and that the protective position adopted
by the European Community makes Community industry less efficient and may create
conflicts with international obligations. 3
The first part of this article explains the basic legal and economic issues related to the
question of exhaustion of trade mark rights. The second part analyzes the position of
the international exhaustion doctrine in the EDlegal system, both prior to the adoption
is assessed critically from various perspectives. Finally, the potential impact of WTO
law on the exhaustion of trade marks will be considered.
The article thus concentrates on situations where trademarked goods are imported from
third countries to a member state of the ED. Although on the surface the question of
international exhaustion may be a fairly simple one, it is, in practice, far from that.
Firstly, there are other relevant European Community law (EC law) provisions
potentially applicable in parallel importation cases besides trade mark legislation - for
example, the Community competition rules maybe applicable aswell. Article 81 of the
EC Treaty may also apply in cases where the trade mark owner has, through collusion,
prevented the import of the trade-marked goods into the ED. Questions related to the
application of competition rules to the parallel importation cases fall outside the scope
of this article. 4
Secondly, the multiplicity of different relevant factors affecting the analysis of the
international exhaustion problem is evident. In order to assess the question of
international exhaustion of trade mark rights in an EC Law context, it is certainly
necessary to evaluate the relevant case law of the EC], which is often ambiguous and
open to different interpretations. An analysis of thecase law of the EC] and the relevant
secondary EC legislation alone is, however, inadequate for a proper understanding of
this issue. It is also necessary to demonstrate some of the flaws and contradictions in
the case law, and sometimes in the adopted policy more generally. The ED's position
post Silhouette is examined using such an approach. The structural and functional
relations between national, Community and international law form the basis of this
3. The functions and nature of different intellectual property rights vary. The exhaustion doctrine should
take account of these various functions and differences in the nature of rights. This article concentrates
on the exhaustion of trademark rights. It should be emphasized that the suggestionspresented do not
apply mutatis mutandis to other intellectual property rights.
Javico International and Javico AG v. Yves Saint Laurent Parfums SA [1998] ECR 1983. See also
Hayes and Hansen, 'Silhouette is Not the Proper Case Upon Which to Decide the Parallel Importation
Question', European Intellectual Property Right Review (1998), 277 and G. Tritton, Intellectual
Property in Europe, (Sweet &Maxwell, 1996), 366-370.
52 7 M] 1 (2000)
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